Trademark and Technology Primer

A mark is a word, name, symbol, and/or device, used or intended to be used in commerce. The four types of marks are trademarks, service marks, certification marks and collective marks. Trademarks are marks used to indicate the source of a product. Service marks are marks used to indicate the provider of a service. Certification marks are marks used by someone other than the owner to certify the origin, material, mode of manufacture, quality, accuracy of a product or service. Finally, a collective mark is a trademark or service mark used by members of an association, cooperative, union or other organization.

Owner

Mark

Type of Mark

Goods and Services

Apple Inc.

PHOTOCAST

Service Mark

Providing access to digital images via the Internet.

Apple Inc.

PHOTOCAST

Trademark

Computer software used to transmit and download photographs and to allow others to view them.

A word can be both a trademark and a service mark. In the above example, Apple Inc. had registered PHOTOCAST for use in commerce as both a good and a service.

Owner

Mark

Type of Mark

Goods and Services

John Hancock Life Insurance Company

Service Mark

Banking services.

Tiger Woods Enterprises S.A.

TIGER WOODS

Service Mark

Building construction; repair, installation services; construction work on facilities for building and maintenance of golf courses and golf driving ranges.

A trademark or service mark can also be a person's name, living or otherwise.

(The color(s) RED AND YELLOW is/are claimed as a feature of the mark. The mark consists of a stylized yellow "M" forming a double arch design on a red background. The drawing is lined for the colors red and yellow.)

Service Mark

Restaurant Services.

Trademarks and service marks do not have to be words, as seen by the above designs. The design can also specify a certain palette of colors, like the red and yellow for McDonald's golden arches.

Owner

Mark

Type of Mark

Goods and Services

McDonald's Corporation

BA DA BA BA BA (The mark is a sound mark consisting of a five tone audio progression of the notes A B C E D accompanied by the words BA DA BA BA BA.)

Service Mark

Restaurant services.

Geoffrey, Inc.

The mark is a sound, consisting of a musical score and the words "I don't wanna grow up, I'm a Toys R Us kid, they've got a million toys at Toys R Us that I can play with, I don't wanna grow up, I'm a Toys R Us kid, they've got the best for so much less, you'll really flip your lid, from bikes to trains to videogames, it's the biggest toy store there is, gee whiz! I don't wanna grow up, 'cause baby if I did, I couldn't be a Toys R Us kid" sung along therewith. Attached is sheet music for the song clearly explaining the notes played and/or sung in the mark.

Trademarks and service marks can also be musical notes or songs, like the five-note jingle from a McDonald's commercial or the Toys R Us song with accompanying lyrics.

Owner

Mark

Type of Mark

Goods and Services

Skype Limited

(The Certification mark, as intended to be used by authorized persons, is intended to certify that the goods and services conform to internal quality and compatibility requirements, pursuant to standards designated by the Applicant.)

(The color(s) red, blue, black and white is/are claimed as a feature of the mark. The mark consists of a blue wave approaching a black lighthouse, with white windows; the words "TsunamiReady" are in red and the words "National Weather Service" are in black. This certification mark, as used by local and regional governments, cities, towns, and other legal jurisdictions, certifies that jurisdiction's tsunami preparedness and response capabilities have met the standards set by the Applicant.)

Certification Mark

Severe weather preparedness of state and local jurisdictions.

The above are examples of certification marks, which are used by persons or organizations other than the owner to indicate compliance with certain standards set forth by the trademark or service mark owner.

Indicating membership in a(n) association of legal professionals, bar organizations and others who render legal services to the elderly and those with special needs.

Finally, the above are collective marks used by members of an association or organization.

Trademarks and Keyword Advertising

Keyword advertising is the practice of displaying targeted ads whenever a user's search engine query matches a preset list of words. For example, a search for digital camera may return ads from digital camera retailers, digital camera comparison shopping sites, as well as digital photo printing services. For businesses, the advantage of keyword advertising is that their ads will be highly targeted since the people viewing their ads have already expressed an interest in their products or services.

However, companies sometime find themseves the target of unwanted litigation when they target their ads based on a competitor's marks or use a competitor's trademarks or service marks within the text of their advertisements. Unfortunately, the legality of using another company's trademarks within keyword advertisements is currently unsettled with courts with domestic and foreign courts reaching conflicting resolutions.

If you or your competitors advertise online, be sure to review the keyword advertising policy from the major search engines: